Free the Orphans: A Look at the Case of Kahle v. Ashcroft

Congress shall have the power ... to promote the Progress of
Science and useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and Discoveries.
-- United States Constitution

Mike Perry, an editor for Seattle-based Inkling Books, wants to publish
the writings of Dr.
Leo Alexander. In Perry's view, Alexander, a Vienna-trained psychiatrist
and Army officer who followed American troops into Germany in the final
days of World War II, has a lot to tell us about the nature of evil.
After the war, Alexander served as special medical advisor at the Nuremberg
War Crime Tribunals, and after the trials, Alexander wrote a number
of articles for professional journals about Nazism and particularly,
the SS. Alexander described how the Nazis glorified death and how they
justified their crimes.

Republishing these articles, Perry thinks, would make a particularly
relevant book for today's readers. "In our current struggle with terrorism,
we shouldn't just dismiss evil as the product of insanity or fanaticism.
Understanding evil is the first step in countering it," Perry said in
an email.

So Mike Perry contacted the journals, most of which are still in publication,
and found out that in all cases Dr. Alexander had retained the copyright.
If the magazines held the copyright, they surely would have given permission
for their republication, probably at little or no cost. Perry couldn't
ask Alexander himself, since he had died. And Perry has been unable
to locate Alexander's heirs. End of the road.

Who's Got the Copyright?

Perry's attempt to publish Dr. Alexander ended in failure largely because
of the difficulty in tracking down literary heirs, but since 1976 Congress
has made it even more difficult for would-be users to identify who holds
a copyright. Ever since the U.S. Constitution became the law of the
land in 1789, copyright law had stated that authors and artists had
to claim copyright by filing a claim with the Copyright Office. That
gave you protection for a certain number of years (originally 14 years,
extended many times over the decades). If you wanted to extend copyright
past a relatively short initial term, you filed for an extension. This
meant that the Copyright Office had to keep a registry of works in copyright
and the names of the copyright holders.

Beginning in 1976, Congress dramatically changed the law. In an effort
to comply with the Berne
Convention, the international copyright agreement, the new (current)
law did away with copyright registration, automatically granting copyright
at the moment of creation. It set the term at lifetime of the author
plus 50 years. It did away with the renewal requirement. And then, to
put the icing on the cake, in 1992, Congress retroactively applied the
elimination of the renewal requirement to all works first published
during 1964 through 1977.

These changes to the copyright laws had an unintended consequence: they
created a class of so-called "orphan works," works that would have gone
out of copyright when their creators failed to renew a copyright claim
under the old law, but which are now kept in prolonged copyright. (It's
an irony of the law that term is defined by the "lifetime of the author,"
but that no registry of who the authors are or whether they are dead
or alive is maintained.) And it is these works that are the focus of
a new lawsuit, Kahle v. Ashcroft.

Orphan Works

Filed by two digital archivists, Brewster Kahle of the Internet
Archive and Rick Prelinger of the Prelinger
Archives (which are hosted on the Internet Archive), the suit seeks
to show that the law creating orphan works is unconstitutional, according
to Chris Sprigman, who serves as lead attorney on the case.

For orphan works, says Sprigman, "the removal of mandatory formalities
(registration, notice, and renewal) and extension of copyright terms
only burdens use, it does not benefit rights holders."

Mandatory formalities
created a "filter of renewal," says Sprigman, through which works pass
only if the copyright holder explicitly renews them. Historically, only
15 percent of works passed through this filter. But in the 1992 Copyright
Renewal Act, the orphan works were automatically renewed.

"That's not
the filter of renewal, that's renewal by fiat. The terms of those works
was then extended again in 1998 in the Copyright Term Extension Act.
That extension was different than any extension in the past because
it happened without the renewal filter having separated the valuable
copyrights from those that have stopped delivering returns to a creator," says Sprigman.

A Million 19th Century Books

Case in point, says Kahle, is the Million
Book Project, a National Science Foundation-funded effort spearheaded
by Raj Reddy, a computer science professor at Carnegie Mellon University.
With cooperation from the governments of India and China, the Million
Book Project scans public domain books, and the Internet Archive hosts
the files. The goal is to digitize and put online 1 million books. Since
the project deals with public domain materials, most of the books are
very old.

"The question for the Million Book Project is, what we are allowed to
make available? Under U.S. law, before 1964 it's not very hard to figure
out which books are under copyright because there's a registration system,"
Kahle said.

"But then there are all the rest in this limbo period, the
so-called orphan works. I can't tell you how many books are caught under
this, but it's a huge number. They're not in print, not available commercially,
but under copyright. ... I would conservatively estimate that more than
50 percent of the books from this period are in this state," Kahle added. (Sprigman
puts the number at 85 percent, based on renewal rates under the old
regime.)

"Unfortunately, these works are not few--there are millions of them,"
Kahle points out. "We would like it clarified that we can make out-of-print
works available on the Internet; otherwise we live in a world of just
very old works in the public domain and commercially available works.
Everything in between effectively will be denied the next generation.
... We could lose the 20th century."

A visit to the Archive's web site
reveals the truth of the situation--virtually all of the works online
come from the 19th century and early 20th century; available works stop
roughly in 1924.

The situation even has international development implications. When this
writer visited
the National Library of Uganda to implement the Uganda
Digital Bookmobile, I found several fascinating, disintegrating
first edition volumes by Stanley, Speke, and other British explorers,
as well as books about colonialism and independence written by African
scholars in the 1960s. The Ugandans could digitize the often-racist
19th century British works but not the much more relevant works by African
scholars. What kind of digital record is this for Ugandan students?

Copyright Lasts Longer Than Film

For film the situation is a preservation crisis, says Rick Prelinger,
who archives ephemeral
film -- government films, commercials, social hygiene movies, etc.,
from the 1920s through the 1970s. "Copyright currently lasts longer
than film," he says. If archivists can't preserve and digitize the hundreds
of films from the 1960s and 1970s, they will literally disappear forever.
The images will fade away, the physical films will disintegrate.

"We broke new ground by being able to put a great deal of our moving
image heritage online with the Internet Archive. It's just a drop in
the bucket but people have been given a huge amount of access," Prelinger
says. "Probably between 1.5 and 2 million individual films have been
downloaded and are out in the world now; people teach with them, people
link out of syllabi to them. But the orphan films that are caught in
this limbo ... we can't do anything with them. They are probably abandoned;
they probably don't have any willing parent who wants to take care of
them ... but we cannot assume the risk of doing preservation work or
conservation work or preservation copying of any of those films and
putting them online."

Notably, the 1964-77 period is a critical group of work for preservationists.
"This is a period when people starting making color film that fades
to pink. If you act fast enough you can stabilize that and make copies
that are decent color. Right now we can't. ... All of the post-1963
material we have on the Archive, with a very few exceptions, is government
material. There are literally hundreds of thousands of abandoned films
from that period that we and others could make available."

And of course, it's today's digital and online capabilities that create
a real opportunity to make use of these old works in ways that were
never practical or even imagined back in 1976. "We now have a system
that allows us to distribute creative work inexpensively and ubiquitously,
so why not use it? We really feel strongly that there could be a great
cultural efflorescence. Cultural and group identities of different generations
would begin to make it out there on the Net. The books that are on the
Net right now are very, very old and there isn't anything for younger
people to point to and say that's my life, that's my culture."

What Kahle, Prelinger, and other digital archivists have done so far is just
the tip of the iceberg. There has already been a great flowering of
originality flowing from the ability to use and reuse public domain
works in digital form and it is the massive expansion of their
work, of the digital distribution of millions more books, movies, audio
recordings, and web sites, that will truly transform our culture, and
our ability to speak about our world. That right of speech is severely
curtailed when the raw materials are limited to the period that ends
in 1964.

Contours of Copyright

If you accept that damage has been done; that the law does not "promote
progress"; that relevant artistic, literary, and multimedia works are
prevented from being created; that huge swaths of our heritage are headed
for oblivion ... even if you agree with all of that; there is still
the question of how the case will fare in the courts.

Sprigman took pains to explain that the case is not Eldred
revisited. That case challenged the right of Congress to extend copyright
terms as they did in the 1998 ("Sonny Bono") Copyright Term Extension
Act. In that case, Larry Lessig argued that allowing Congress to extend
terms as it pleases violates the "limited term" clause of the Constitution.
(See www.oreillynet.com/pub/a/policy/2003/01/03/cc.html.)
The Supreme Court didn't take to this argument, noting that they were
loath to impinge on Congress' rights in this regard. The new case, Sprigman
says, isn't about term extensions, it's about the shift from formal
copyright registration to automatic, implicit copyright. Yet, this case
builds on the Court's decision in Eldred.

"Think back to Eldred for a moment. There was something the Supreme Court
said in Eldred that was very interesting. They said, we don't
need to look very rigorously at the First Amendment consequences of
term extensions just so long as Congress has not disturbed the traditional
contours of copyright. The whole basis of the Eldred decision
was, look, Congress has repeatedly extended the terms of copyright--this
is nothing new, and so this term extension (the 1998 CTEA) does not
disturb the traditional contours of copyright.

"Whatever you think of that," Sprigman continues, "I would make the following
observation. Whenever Congress has extended copyright before, it only
extended terms for works that have passed through the filter of renewal.
For works that are renewed, it sends a signal that these works have
enduring copyright value. If there's ever a time when extending terms
of existing works makes sense, it would be for works that have successfully
passed through the renewal filter. The term extension in the CTEA extended
terms for works that had never passed through the filter of renewal.
That was the first time that happened."

While the question of orphan works seems like it would be easy to resolve--it's
hard to imagine the vested interests who would claim that those works
should stay under copyright; after all, most of the copyright owners
explicitly failed to renew those works--this suit does go further, much
further. It attacks the legitimacy of the 1976 Act itself, a bedrock
of modern copyright law.

Sprigman explains: "Congress' right to grant exclusive rights is premised
on, we say, a requirement that it 'promote progress' in whatever system
it enacts of copyright and patent. And we say that in moving from a
traditional copyright system with a bunch of formalities, which focused
copyright on works for which copyright could actually do some good,
to an unfocused system of unconditional copyright where copyright is
granted indiscriminately and automatically--in doing this, Congress
has failed to promote progress. That shift does not promote progress.

"Copyright is a property rights regime just like any other property rights
regime. For 186 years the rule was that if you wanted a property right
for your intellectual creation you had to hold up your hand and say,
'I want this' and register to get it. Flip that regime to one where
property automatically vests in you the minute you lift your pen from
the cocktail napkin ... that's a very, very meaningful shift in the
character of the copyright laws. And it's a shift that hasn't benefited
anyone systematically and that has caused harm, real harm, and does
not, on balance, promote progress."

As far as property rights go, the copyright laws make for a rather strange
system. Like physical property rights, the law imposes harsh penalties
for "trespass," notes Perry, but unlike real estate law, copyright law
"does absolutely nothing to track down who owns the title to a piece
of property. ... Land ownership records are carefully maintained by
the state and when an owner dies ownership is legally transferred to
someone else. That's why it's quite reasonable for the law to forbid
me from using someone else's property without permission. This is not
the case with copyright. The government owns few and often out-of-date
records and yet acts as if the ownership were easily and unambiguously
available."

So, what will the plaintiffs ask the courts to do? Overturn the 1976
Act? Put the U.S. out of compliance with the Berne Convention? Force
Congress to reinstate the registration system, put orphan works in the
public domain, and return copyright terms to their pre-1976 levels?

"There are many possibilities for a remedy," Sprigman says. "Pending
in Congress is the Public Domain Enhancement
Act, which would, at the end of a life-plus-50 term, impose a small
renewal fee in order to provide a filter, thereby winnowing out some
valuable copyrights and letting the rest move more quickly into the
public domain. There's a change that could be quickly implemented that
would help. Another change would be at the international level. We are
signatories to the Berne Convention, which prohibits formalities. Perhaps
we could propose to make some changes to the Berne Convention, which
would allow us to reformalize our domestic copyright system." And Sprigman
believes that, if necessary, we don't even need to change Berne: "We
could reformalize purely at the domestic level if we do it correctly."

The Dispirit of '76

This seems like a big bill of goods--reforming the '76 Act--since in
the oral arguments of Eldred, the Court seemed to say that looking
at the 1998 CTEA would mean looking at the '76 law, which they clearly
did not want to do. The impact on international treaties was one concern
mentioned in the arguments. So, why would lower courts be willing to
look at '76 now?

"It's true that the Court was reluctant--in the context of Eldred--to
get into '76. But that context was interesting in that Eldred was looking
narrowly at term extensions and I think that what the Court was responding
to was the uncomfortable truth about '76. The 1976 Act changed the direction
of U.S. copyright law. It really represents a break with the historical
norms. To a certain extent we're going to have to look at the 76 Act
and we're going to have to think hard about whether systemic change
is necessary. We're hoping in this case not only to win our Constitutional
claims but also to get people thinking about our copyright system in
the last quarter century and to consider whether this system is a good
system for the digital age."